Posted
by
michael
on Tuesday November 13, 2001 @08:14AM
from the man-bites-dog dept.

Matthew writes: "For years, student researchers at universities have alleged that the hierarchical system in academic research allows supervising PhDs to steal and patent inventions that were rightfully discovered by students. The Federal Circuit finally addressed these concerns by interpreting the law in a way that strictly protects the rights of student researchers. As such, student researchers will now be able to sue their supervising PhDs for any actions that are not in the best interests of the student researcher or the patent rights of the student researcher."

This makes no sense. On one hand I think "While maybe it's a classic Slashdot slam at patents?", but in this case the innovators are the students, rather than the professors, so...it just makes no sense.

This makes no sense. On one hand I think "While maybe it's a classic Slashdot slam at patents?", but in this case the innovators are the students, rather than the professors, so...it just makes no sense.

Very simply, the person who does the work gets the credit.

Also, this had nothing to do with software, and was about a victory for college students. Since many slash readers are college students, I can see the original article getting cut out and sent anonymously to many a college professor who has acted like a jerk over the years. Many of them will take advantadge of a students naivete.

And many will just blatantly say "everything you do is mine", which is something we do not want to encourage.

The original post compares to -- and effectively satirizes -- a standard RIAA argument that record labels need to keep the copyright on the music that they put out even though it's created by others; If record labels don't keep the copyrights to the music, they have no incentive to bankroll musicians, and then recorded music as we know it will end.

I think this is definately a good thing. There are so many instances where a "higher up" takes credit for something someone else has done. Hell, some people have made a career out of it. I can think of several times in my own life when I didn't receive credit, simply because I was the "young guy." When I was 19 I was interning for a consulting company, and I happened to solve a problem for one of our large accounts. When the customer came by the credit was given to an older tech. When I approached my boss about it later he said, "We can't have them thinking our important projects are being completed by teenagers." I thought IT would be the ONE field where age discrimination would not abound, but alas, that is not the case. Maybe this will send a message to people everywhere that young != dumb.

When the customer came by the credit was given to an older tech. When I approached my boss about it later he said, "We can't have them thinking our important projects are being completed by teenagers." I thought IT would be the ONE field where age discrimination would not abound, but alas, that is not the case.

If other techies came into the building and your boss credited an older techie to them then I would understand your ire. But the moment your boss starts interacting with the customer you move from the IT world to the business world where the rules are not the same. If your boss promised your customer he had put his most experienced staff on their case (which he probably does to *every* customer) then much as it may seem unfair I can see why he did it. I've been publishing software since 15 yrs old and have never worried about credit, to me the satisfaction of solving the problem is enough without need for external validation.

Now I run a small software house I can see how important your external image is. The trust of your customers is critical, and no matter what is happening internally the customer must see a slick professional company that delivers timely solutions. Look on the bright side, your company probably billed out at twice the rate for the senior techie and that paid for your xmas bonus:-)

"Rather, the suit challenging inventorship must be brought by a party that has some interest in the patent, such as a financial stake in the success of the invention"

IANAL, but someone who is might be able to say if things like credibility, pride, or the downright disgust of the theft of something someone's poured a lot of time into are an "interest". I don't understand why if I claimed I invented the "XYZ" (when in fact my student did), the student would have no real legal recourse to say "Excuse me, that was mine, even though it's financially worthless".

What? You're not satisfied with financial motives? What are you - a commie?

Kidding aside, I find it appawling, that the federal district court in Illinois refused to let her sue. I also find it appawling, that the professor hasn't been fired for gross negligence and cunduct unbecomming.

Accually he can be fired, but there are a lot of rules designed to make it difficult to fire someone tenured. Normally they will only go through with those in cases of sexual harrassment, extreem lazyness (don't publish for too long), or other serious crime.

I'm surprized the university didn't fire him when they found out about this. It is certinaly a case where they should do that. Of cousre I don't have the whole story so maybe they did.

I've NEVER seen a tenured prof fired for anything BUT sexual harrasment. Errr...except Bob Knight (yeah he was considered a tenured professor) and that was only after he publicly attacked a 'disrespectful' student because he refered to him as simply 'What up Knight?'.

Seriously...you have to do something that is soooo in the publics eye and so far out of character with a university that it can't ignore it anymore before you get fired as a tenured professor.

Heck, my office went through with something like this about two years back. An employee of mine decided to do her Senior Thesis as a project with my department. She had gotten approval to do so by her academic department. The Academic Department did not offer her any guidance or otherwise other than this approval and suggestion on the scope of the project which happened to be 'Do What The Customer Wants'.

Anywho, she gets the project done, does the write up on it and turns everything in...source code and all. 3 Months later, I find her professor is trying to sell the code that I paid for and claim that it is his. Now, my department is a non-academic department at the same university..but it is entirely funded by grant work. We pay rent to the university and pay the university a large amount inwhich they turn around and pay our salaries. In a sence, we are paying to work here because we can (and some cases have) take the research outside of this institution and keep a larger chunk to ourselves.

Ok, that complicated things a little more. We 'work' for the same organization its a little harder for one department to get satisfication from another. This professor is now trying to sell the code to other universities and other organizations saying that he wrote it himself. We had to escallate this to a legal means using our grant provider (who legally owns a big chunk of our research) outside of the university and then bring in internal arbitration.

At this arbitration, this professor reiterates the fact that he wrote 99% of this code and she helped him. The fact of the matter was that since this was for her senior thesis, I helped her get direction on this and explained theory behind certain ideas in implementing my research, but she did 99% of the coding...with maybe 1% of it being me.

The professor that she was working with academically couldn't even understand the first bit of this, and couldn't even follow the code to reverse engineer it. I had to install it on his computer because he had never done anything like this before and couldn't follow the simple directions given on the cdrom.

The subject area of this research (psychometric shtuff) was something that she didn't know much about and the professor knew less of. In the end, he claimed that it was all his idea, it was his code, and it was his project...much to the dismay of our grant provider and my boss. Arbitration was the only way to get this out in the open and it was more or less determined that this professor was lying and had stolen the code, BUT that as it was freely given for a class assignment, the university could asurp it and do what they want...even though it was paid for by someone else. He was no longer free to sell it himself without the universities permission, along with the owners of the software.

Needless to say, everytime he's had opportunity to sell it, I've consulted with the grant provider and we've simply given a site license to them. I'll be damned if I let this asshole make any money off the deal, and they back me up on this. They paid for it, and they aren't going to let anyone else make a profit either. As he is guarenteed a certain percentage as pursuant to his tenure agreement, we are making sure that he gets exactly 49% of nothing.

So back to the point, this stuff is expected in academics. If ya don't think so, you are fooling yourself. Universities know this, and will go out of their way to make sure that their proffesors are paid well, even if its not by them. They don't want to take any chance of anyone thinking they are showing any improprieties, so its all swept under the carpet.

Luckily in my case, the stuff we were working on was supposed to be free anyways, but now we are forced to give it away for free 'under contract'. My student got screwed and her reputation on this campus was blemished and the professor simply walks away from this...though enough folks know what a sleeze and an asshole he is now...and I make it perfectly known on this campus NOT to do anything with him that he could injure a student with at a later point. None of my employees will ever work for him again, and as I've had some of the most talented programmers on campus vieing to work for me, it means that his pool of students that he can get to do his work for him is less than it was a few years ago. They make it known to the other students as well...the only thing I can hope is that he doesn't publish and the university will get sick of paying him...but that won't happen. Tenured employees never get fired...

Note that it says "such as" a financial stake. I believe that by stating they must have "some interest" in the patent, they are trying to prevent unnecessary lawsuits. Even if something is financially worthless, as would be the case if the university (who owns the patent) didn't pay royalties or the product were to be given away for free, there may still be a significant interest in the ownership of the patent since such things tend to advance careers, etc.

In my opinion, it's common knowledge that great injustices are performed against students by their teachers in patents and journal entries. Although this doesn't change the policy of patents becoming the property of the university, it does protect the student a bit more. Just because a university gives a vehicle to get ideas/inventions out, it doesn't mean that they can claim them as their own. I do believe that this corrects a widely practiced injustice.

They already do, as do full Doctors. If you read the entire article, you'd have seen that the patent ownership was given to the University, but internal regulation at the University stated that part of the royalty payments should go to the inventor or inventors.

All this is going to do is make students have to sign of their rights to patents and research, just like those of us in the real world do.

I'm not sure that's as universal as you make out. My partner recently submitted her Masters thesis to the University of Cambridge, UK. In the formal information given to students, along with rules about what needs to be submitted where and such, there is a section that basically says students should be mindful of their rights to intellectual property, and mark copyrights and such accordingly. The University obviously requires a non-exclusive right to use the material, e.g., to put it in their library, but that's about it, IIRC.

I'm not sure what the exact state is on patents rather than copyright, but take a look at Zeus [zeus.co.uk], a company based in Cambridge and started by ex-students. Their whole business is, apparently, based largely on one particularly good bit of work they did while studying. Given how well they were doing until recent economic events, I'm pretty sure people would have had a word if the patents weren't legit.

And what's this about "those of us in the real world", anyway? I don't know about you, but certainly I've never signed a contract that makes anything I ever discover (even on my own time) the property of my employer, nor will I ever sign such a contract. If I were going to do the kind of leading-edge research that many of these people do, I'd want to see some reasonable proportion of any future revenue/rights as well. Sure, if I'm being paid to do the research then the person paying will get the lion's share, as is only reasonable. But if my research is that important, and something only a select few people could do, they shouldn't mind letting me in on the profits a little as well.

If you were paying yourself for the true cost of the facilities provided by the university, then student ownership of the patent would be justified. But I certainly didn't when I was doing my PhD, and I wouldn't imagine many others were.

Now I'm a postdoc researcher, if I were to produce anything patentable now, that would be as part of my job - what I'm paid to do (unless I come up with something unconnected at home and in my spare time) - I've signed a form to this effect, so I can't complain about it afterwards if they take ownership. Not paying royalties would be another matter though.

just because it says so in your cotract doesn;t mean it is so. many illegal tihngs go into contracts and just because you've signed them doesn't make it valid.

yes, for the most part if you come up with something ptentable while at work, on work related topic then it's highly likely to belong to the co, but there are clauses in english law at least where the worker can get that patent for themselves

if the invention happened in a subject of which any knowledgeable person in the field whould not expect any innovation to reasonably come from, then the inventor has a good claim to keep the patent for himself. there is also stuff in the uk patent laws about if a company buys a patent off you for little and then makes a huge amount of money off it, you can get compensation off them for not paying you enough in the first place.

don't know if any of tihs stuff has been superseeded by euro stuff though.

As a co-inventor on US Patent# 5,331,222 (which has turned out to be basically worthless;), I'd like to suggest to graduate students that they ask around as to whether a research advisor is proactive in getting students names on research papers, patents, etc., or whether they are not.

I've had the luck to work for two [umd.edu] professors [jhu.edu] who were very pro-active about getting student names on papers and patents.

That remember me my face when I've seen my work on the Internet - I was researcher in the Computer Engineering section of an italian University for my end-of-studies work - This work involved the creation of a real-time algorithm ( image processing ), and the implementation of the applications proving it was working perfectly.
The trick is that, even if there has been conferences, articles (IEEE) about my work, my name hasn't even been mentionned once. Not that I wanted to be a star, I don't mind at all in fact, but I though it was normal to mention at least the name of the people who worked on the project ( approximatively... only me:)).
That's the rule : you invite a student to help you doing something ( or do everything ) then if it's good, you take it for yourself.

and not the GWB kind of justice. It's pretty sad to see when a person with one of the brightest minds in the world have such a complete lack of ethical values.
I really shouldn't be that surprised. It's not like people with PhD's are immune to being ignorant theiving bastards. I guess this guy just decided he wasn't ready to be a full-blown evil genius quite yet; figured he better start with something small, and then work his way up to taking over the world.

If the appeals court decision indicates a duty of the mentor to the student, can the mentor be criminally liable for failing to perform?

In this case I don't see a single reason why Chou's mentor is even allowed to remain at the University, let alone be free. He lied, then used the University system against her, and finally used his authority to prevent her from redress. Flat out we don't need anyone, no matter how highly acclaimed, leading research groups.

This should lead to a complete investigation of any patents where he is listed as the sole discoverer.

How on earth can it become criminal if the actions by the mentor/PhD are not in the best interests of the student researcher (or "failing to perform" as you put it)? As far as I can tell, only when the mentor actually breaks a section in the criminal code, say theft, fraud or maybe he slaps her around in the lab... aside from these kinds of actions, most of these so-called patent-stealing PhDers would be subject to civil litigation... not criminal.

But I agree that the University (as probably all others in the US) would be well advised to take action to avoid this happening again in the future (and thus a potentially large lawsuit):

he should not be allowed to be solely in charge of student researchers;

his prior patents should be re-examined; and

new student researchers and mentoring PhDs should all be educated about what is acceptable conduct in this area, what kinds of rights to patents students have, etc.

Patents aren't linked to criminal law the way copyrights are. The duty you mention is a duty in civil law.

When does it become criminal? When it crosses the line into fraud. And yes, it is possible for something like this to become fraud, especially if the royalties that come in from an affected patent are significant.

But that would be a separate proceeding, with different rules. And yes, I'd expect that a prof convicted of fraud would lose the appointment, tenure or no tenure.

The student' win is important, as it states the autonomy of the student in respect to his/her teacher/head. It is usual that head's names are added to scientific papers just because they are supervising the work of PhD students, even when supervision is just formal without real support to the student. The student, in such approach, is something like a slave, whose work is owned by the supervisor. The article says also that "...student researchers will now be able to sue their supervising PhDs for any actions that are not in the best interests of the student researcher", which gives supervision a more strong and formally bounded meaning, possibly increasing the quality of supervision itself and thus the benefits for the students.

The autonomy of the student is still not there, even if they can sue to get their name on the patent. Why - because the PhD advisor still has the power of the "Letter of Recommendation".

Piss off your advisor and expect a less than glowing letter of recommendation. Rather than writing a blatent "...student X is a horrible researcher" they'll leave out crucial recommendations, making the student look like a lackluster potential hire wherever he or she might go.

I remember my days as a grad student working on my PhD in chemistry, and I saw this power first hand. And the professor didn't even have to exert it, just the fear of it being there was enough. I watched whole other research groups do EXACTLY what their professor said to do because of this power. Your entire career can be ruined before you even start because your PhD advisor continues to give you less than average letters of recommendation. When it comes to hire the student, who do you think the employer is going to believe? The student saying his advisor treated him or her like dirt, or the tenured professor? Unfortunately, the tenured professor wins just about every time.

Thankfully, my advisor would put our name on the patents that he did decide to pursue, but when the agreement was written as to who would get what percent of the proceeds (after the University took its share) my advisor would take the lion's share, if not all of it.

Ultimately, patent rights go to the creator of the idea, not who did the work. Patent law is so broken in this regard that all you have to do is prove the idea is your own and its original. Once you've done that, it doesn't matter who did the work to prove that the idea and claims would be valid, the patent rights go to the creator of the idea.

While I firmly believe that the law does indeed protect students who invent things from having their innovations stolen, my concern lies elsewhere. The collegiate community has long been free from many concerns that private businesses must contend with in regards to innovations. I would hate to see this bring the level of freedom colleges have to a substandard level. Graduate students signing contracts and and more lawyers...what a horrible thought.

Anyway, I would just like to caution those applying this law in college settings to make the system the least cumbersome as possible. Free-thinking is the backbone of our collegiate system.

Clear something up for me, does this mean that the Professor pays for all the equipment, helps the student work on their research or lets the student work on their projects, then when the student takes one of the ideas to the patent office he gets all of the credit for it?

Don't get me wrong, I think you should be able to patent your own ideas, but if they are not completely unique and unrelated to the work already done by the professor than you should not get all of the credit.

Chou was suing to be *included* on the patent, not to become the new patent holder. In reality, the patent goes to the University which payed for all the equipment, allowed the research at its facility, etc. But the student is entitled to some of the royalties because they were a major part of the research. The faculty-member would still, rightfully so, have their name at the top of the paper. This faculty-member stepped too far, however, and made his name the ONLY one at the top of the paper.

But the student is entitled to some of the royalties because they were a major part of the research.

Having your name on the patent doesn't entitle you to anything. Most inventors never see a dime from the royaltees on their patents--it all goes to the assignee. If the school has an enlightened policy and if they actually own the patent, they may give students and researchers a cut of the royalties, but even then, they are not under any obligation to be fair about it--they might well decide only to reward professors and postdocs, no matter who is listed as co-inventor. If the research was sponsored by a company, often, none of the inventors sees any money beyond the grant.

This decision doesn't give anyone the right to take an idea from someone else and patent it without adding said person to the patent. What it does is prevent the exclusion of important parties to the research, be they professorial researchers, or graduate research assistants. The decision basically states that the two positions should be equal under law. Nowhere does it say the student can act with the same blatant dishonesty which this professor showed to his graduate student.

> Clear something up for me, does this mean that
> the Professor pays for all the equipment,
> helps the student work on their research or
> lets the student work on their projects, then
> when the student takes one of the ideas to the
> patent office he gets all of the credit for it?

More likely the UNIVERSITY pays for all the equipment, etc., and the professor takes all the credit.

If you're working for the professor, it's the professor's work and he/she should get the credit.

If you and the prof are both working for the University, the credit ought to be shared.

On the other hand, it'll give researchers a reason to research, rather than plagarise.

As it stands, if you can copy, and get away with it, you get the bit of paper. If the supervisor then wants to try patenting the idea, it's -them- that's heading for the boiling oil.

If the researchers might actually -earn- something off their work, then copying doesn't cut the mustard, and some real work might get done for a change.

However, we can't assume this. The reward system is not guaranteed to produce better work. Indeed, there is an excellent paper over on www.gnu.org that describes research which shows that the reward system can actually CRIPPLE real innovation and imagination.

Personally, I think that if Microsoft's fortune were split between America's schools, colleges and Universities, they'd be able to reduce the fees enough to have students to teach, and be able to pay teachers enough for them to have no desire to steal their student's work.

(With enough funding, America is capable of getting 60-70% of the population into higher education. If each of those people produced one piece of useful, innovative work, which was then their own to licence or free as they wished, could you imagine how far America could go in the next ten years?)

Personally, I think that if Microsoft's fortune were split between America's schools, colleges and Universities, they'd be able to reduce the fees enough to have students to teach, and be able to pay teachers enough for them to have no desire to steal their student's work.

Why not? It'll be the first useful thing Microsoft's money has ever been spent on.

Since the Upper & Middle classes have absolutely no interest in paying for the Lower Classes to learn anything (which would threaten their superiority complex), and since society needs understanding far more than it needs another Burger King, and since Microsoft is the only Corporation capable of expanding education to the needs of society, where else would you get the money from?

With enough funding, America is capable of getting 60-70% of the population into higher education.

America has too many people in higher education now. Things that should be learned in high school are being pushed into colleges, where everyone is trying to get a 'business' degree.

Not everyone in the population can be a scientist or engineer. Someone has to actually drive a crane and someone has to weld that bridge together. Anyone with a desire and ability can go to college now. I do think that vocational training should increase, 'cause you always need truck drivers, farmers, welders, carpenters, gardeners, waiters, dishwashers, assembly-line workers,...

I don't think you need ``vocational training'' to wash dishes. There exist what we call ``idiot jobs'', which require a) a reasonably able body, and b) the IQ of a retarded orangutan. Many of us work these jobs during our college years, for whatever reason, and shudder to think of the adults who work them their entire lives.

I agree wholeheartedly that the ``everyone should go to college!'' mentality is ridiculous. A quarter of Americans go to undergraduate school. Many of them are idiots. I know, I tutor them. They think they're still in high school; they think they can copy and paste the pseudocode the TA posts on his site, and get away with not *actually* understanding the basics of C++. (UConn apparently requires freshmen to take the introductory programming course. Psych majors are not *meant* to take programming. *shudder*.

I know, there are exceptions... but I tutor. I'm exposed to high levels of Idiot Radiation on a twice-weekly basis. It's not pretty.

Come on, only a tiny percentage of those who go to college *now* produce anything useful or innovative. The rest sort of slide through like they did in high school. Why would we want to squeeze more unmotivated high school kids into college?

I'm all for anyone who truly wants to get a degree going to school. But a lot of people just don't care, and you can't make them. If you try, you get an eight-year high school.

A thing to keep in mind is that the system is designed so as the PhD student requires a good amount of knowledge of her/his director in order to achieve his research efficiently.
What this thing condamns is no more than 'a robbery', not the fact that supervisors have some kind of paternity in the discovery.

After looking at the linked article, it seems clear that the supervisor in this case did something exceedingly dishonest and deserved to get shot down over it. You don't steal your students' work, either by patent or by publication. Period.

However, as someone who advises students, I'm a little worried about the speculation that my students can now sue me and my institution for *any* action on my part that they perceive not to be in their best interest. What if a student feels that I talked him into working on problem X, but he would have finished faster and published more papers by working on problem Y? Can I get sued over that?

What are the limits of my legal responsibility? And more importantly, if I have a particularly risk-averse chancellor/dean/department chair, is this precedent going to chill the advising relationship between me and my students?

If you acted in the best interest of your student, you would know when you are giving advise that is professional and sound.

Also, if I were in your shoes, I would not push a student to go for a specific solution but instead would show him the benefits of each choice and giving him my best professional opinion and not limiting his choices.

Remember, *anyone* can sue you for anything. There's little reason, however, to believe this particular case will set a precedent that makes a suit such as you describe more likely to succeed. So no, I see no reason for you to be concerned.

I am a little concerned by the breadth of the Federal Circuit's ruling. It seems that the panel went far beyond the issue-at-hand (i.e., that a student researcher has standing to bring an inventorship claim -- an entirely reasonable proposition, I think) when it found the student's instructer to be the student's fiduciary. A finding of a fiduciary relationship has significant implications: in general, a fiduciary owes her benficiary a duty of care, loyalty, etc. For example, the lawyer-client relationship is a fiduciary relationship. I'm just not sure that we want to start making professors the fiduciaries of their students, and thereby impose upon those professors a significant new area of legal liability.

In addition, the scope of a fiduciary relationship is a question of state law (in this case, Illinois law), not Federal law -- a fact not brought out in the linked article. Thus, the panel is not only stretching the bounds of the fiduciary relationship, but also imposing liability based on its "best guess" as to what an Illinois state court would recognize. I am not aware of any Illinois opinion that holds that a professor is the fiduciary of his student (altho since I haven't looked at the question, I'm eager to be humbled by someone smarter).

The law review article didn't discuss exactly how the court considered a mentor a fiduciary (ie. one who owes a fiduciary duty.) This term can have different meanings depending on the context. In the business world, a fiduciary of a trust has a somewhat different duty to the trust than a director on a company's board has to the company than an agent of the company has to the company than a shareholder does to the corporation.

For instance, directors are expected to cause a company to take risks and maximize expected return while trustees are expected to preserve capital. The two main fiduciary duties a director owes a company are, IMHO: the duty of care (exercise proper care in the management of the company) and the duty of loyalty (no self-dealing.) The first is restricted by the business judgement rule which means, generally, that decisions made with reasonable information and reasonable rationality then the director can not be liable for it, unless it violates the duty of loyalty. Note that this allows for making dumb decisions, as long as they were made with reasonable information and rationally, as strange as that sounds.

I would think this sort of test would apply in the mentor situation as well: if the mentor acts carefully and does not self-deal then he/she is okay. In this case, the mentor clearly did self-deal: he kept the student's name off the patent so he would not have to share the credit and the royalties accruing to himself. This would clearly violate the duty of loyalty in a corporate setting.

In any case, these duties will be worked out over the next many years in the courtroom. If you are worried about them, though, remember that the primary duty of a fiduciary is to do what he or she has been appointed to do as best as he or she can. An act for which a fiduciary can be held liable is one that is considered a breach of trust. So, be trustworthy and you should be fine.

From the article: This protection will apply to all conduct of the supervising PhD, not just to the type of conduct that results in "stealing" or "cheating".

This seems a bit too wide. I mean, anyone can give bad advice, including PhDs. Just because the adviser thinks the student should jump off a cliff with their stupid project, should they do so? Somehow the liability should be limited to that which is deemed "unbecoming", I think. Otherwise, next thing you know, undergrads will be trying to use this precedent to force professors to give them better grades, somehow.

I agree, but in my view it's still the PhD's word against the undergrad. And the burden of proof would most certainly fall upon the student. I don't think we'll see the PhD suing the student for theft of an idea anytime soon.

1. How often does this theft really occur? I mean, does it really happen all of the time? Really? Can you provide evidence? We've all heard stories, and some of us have seen it happen. Still others have experienced this problem. But, how often does it really happen?

2. I asked the first question for the sake of these questions. Given that students now have more legal power, will this impact the student-mentor relationship? That is, will people (mentors, Ph.D.'s, etc.) be more reluctant to take on students knowing that students might actually turn the tables and claim rights to their work? (Sure, it isn't likely, but follow the line of reasoning and think about what this powershift really means.)

3. Would there have been a better non-legal solution? I can't think of any. Still, I am curious if this kind of problem could have been handled outside the law system. (I think it is unlikely since patents are, by their very nature, tied to the law.)

This is a real story from a lab I used to work at. We were working on a project with a major US group. We were trying to attach little bubbles of glass onto the end of hair thin glass tubes for a laser experiment. We were told the american lab would have no problem with this and that they had 10 techies and a $110 million lab so would get it done in no time.

Six months later and no sucess we gave the project to a summer intern to look at while we found him some real work without much hope of sucess. We can back to take him for lunch to discover him with the newspaper out, the problem solved and complaining of being bored. In this instance the Director of the site took great pleasure in giving him full credit 8)

Moral of the story - brains usually win and any student with one good idea is likely to have more they will get credit for

How did he solve it? Attached a vaccuum to the end of the glass strand and sucked the ball onto it and sealed off the other end with superglue.

is that professors/universities will now require students to sign assignments of patents as long as they work with said professor's/university's resources. Corporations do this as part of their hiring process, and I don't see why a student researcher wouldn't have to sign something to use the resources. University's do not have to let students use university resources.

Now this will give universities and professors a justified excuse to force students to give up their rights to their patents. The courts have turned a gray area where students could escape notice into a very black and white one where universities will have the upperhand.

One of the many statutes to which I implicitly agreed upon entering Oxford University states that "The university claims ownership to various forms of intellectual property produced by students in the course of or incidental to their studies". This includes any patents I might be granted (almost certainly none) *and* any software I might write while I'm here.

Which means that I immediately have to stop work on any Free Software projects, because by licensing my work Freely I would be violating the university statutes. Since I'm doing research at the moment into computer networking -- and working specifically on transport protocol design -- this isn't exactly going to help further my research.

I'm trying to get the university to agree to let me release my work "if it will promote my research goals", but after two emails and a couple weeks without any response I'm a bit dubious about whether this will work.

That 'incidental to their studies' bit seems a bit worrying - it'd be alarming if it meant that you couldn't use your general programming skills (as opposed to specific course related routines perhaps) to write something at home without having to hand ownership of it over to the college.

From my understanding of 'incidental', it means casual, subordinate, but still related. But IANAL, and I wouldn't want to have to get into a legal fight over it. Scary.

Which means that I immediately have to stop work on any Free Software projects, because by licensing my work Freely I would be violating the university statutes.

I'm not clear that this follows. Why couldn't you release the software under your favourite license, and assign the copyright to the university, for example ? I believe there are others at Oxford who have released software, btw. (I develop fMRI software, and IIRC there's a group at Oxford that do the same) You may want to look into this, and contact them. Ah, here it is:http://www.fmrib.ox.ac.uk/~mark/

Why couldn't you release the software under your favourite license, and assign the copyright to the university, for example?

If the university owns the copyright -- which, under their statutes, they do -- then I can't release the software under any license.

There is a clause which restricts University ownership of software to software "which can reasonably be seen to have commercial potential", but that doesn't really help much... I can't exactly send daily patches off to the university for approval as "not commercially viable".

Interesting. I went to MIT, and, as far as I understand, they had almost the polar opposite of this policy. All work done by undergrads (with relation to classwork, anyway - I never did graduate work) is the sole property of the student. This meant that all rights to projects, homework, essentially everything, were retained by the student. And given the nature of a lot of the projects and classes, this was important. Many students have made a lot of money off their undergrad work.

Most universities require graduate-level researchers to sign agreements that the University (and not the student OR the advisor) owns any patents that a researcher might need to take out. From what I've seen, universities are pretty divided on whether they make these patents public, keep them, or return them to the student. The basic premise of doing this is that the University puts up most of the financial resources needed for research. How fair is it for a someone to spend millions of dollars of a schoo's research money and then shut the university out of the financial rewards of that invention?

I seem to remember a case a few years ago where a student, wanting to benefit from his discover, had destroyed his university work, quit school, and then a year later finished his research. The school sued and won, on the charge that the student had committed the equivalent of industrial sabatoge.

The real problem is that advisors tend to steal *credit* for inventions, thus getting patent rights back from the university. This ruling just means that students don't automatically give their rights up de-facto to their advisor/department.

How fair is it for a someone to spend millions of dollars of a schoo's research money and then shut the university out of the financial rewards of that invention?

hang on, I don't exactly know how the american education system works but surely the student pays to be at university, or someone pays on their behalf (ie grant from the gov etcetc) in most cases. if that is so then why does the student not have the right to their inventions. libraries won't sue you to be included on a patent just because you did some research form one of their books.

if the university gives the student a full scholarship then fair enough, if the gov gives the student a scholarship (does this happen?) then the patent should go to the gov to throw open as public domain.

however, if the student has paid their way though then why should they not own the patent?

Simply require all mentoring professors to list once a year all patents that they are applying for.
Give the students a chance to review the list, and have a board to mediate any disputes.
Finally, have the same standards for academic honesty apply to the professors.

I should begin by saying that many students are exploited by their mentors, and when this exploitation becomes extreme, there should absolutely be recourse.

However, in my experience it is not uncommon for students to overestimate their contribution to a project. In many cases, as a student you are expected to do a lot of the "heavy lifting" while the advisor helps guide the process. You trade your willingness to work for the opportunity to gain expertise by working with someone with more experience.

In reality, this ruling is unlikely to have a significant effect on the relationship. However, the mechanism the poster suggests would likely have a significant chilling effect on how profs use students. Mentoring students is rarely all wine and roses: sometimes the research is done more slowly, or less rigorously, or not at all. Adding increased levels of bureaucracy to this process just guarantees students will be passed over, and more experienced researchers used.

Adding increased levels of bureaucracy to this process just guarantees students will be passed over, and more experienced researchers used.

But the graduate schools put our too many PhDs now anyway, because everyone wants to have a graduate program. Some of the schools even recruit primarily foreign students, because there aren't enough US nationals to fill all the spots! I doubt this case will kill the graduate programs.

Well argued, but I disagree with the premise of too much bureaucracy and the chilling effect on research.
What I'm suggesting is no different than the full disclosure laws that public officials have to go though when they are placed on a sensitive board or regulator committee. These laws do work, and have stood the test of time.
I do agree that in pursuit of a PhD that there is a lot of tedious work. I've also seen it from the other side (growing up in a University town, and having a father who not only taught but headed departments), where the politics and the pressures to perform are very great indeed.
Simply using the full disclosure to inform all the students under you that you are applying for a patent tells them (1) what is happening with the research that you are doing, (2) where all the pieces go, (3) how your work might be used.
And on the flip side, if you don't disclose, you run the risk of more lawsuits, which only makes the lawyers happy.

"Congratulations, Mr. Jones, on your court victory. You now own the rights to the patent. Oh, by the way, here is the bill for all of your research time.

"What? You want us to give you a free ride because you're student? Ah, but you see, you've imbalanced our entire relationship: You agree to enter into slave labor for us for several years, and in return, we get to keep the credit for anything you do.

"But since you want to take this patent developed while using our equipment, and our labs, it only stands to reason that you're prepared to pay for it.

"Let's see... you've got this judgement, and we'll subtract lab fees, utilities, maintenance (gotta pay the janitors to empty out the bit bucket)... hmmm... tell you what, just give us another $85,000 and we'll call it even.

"You mean you can't afford that? Well, surely we can work something out. If you'd be willing to work here a couple of years, I bet -- Put down the laptop Mr. Jones, you're scaring me a little..."

ATTENTION MODERATORS: MOD PARENT UP +FUNNY! Geez, that just made my morning:).

Back to reality for a moment, what's the real potential for a scenario like this to play out? I suppose there might be cases where universities had students agree to obscure policies involving something like this, although if that's the case, it'd be on the student for not reading through all policies before signing on.

He has a right to use the equipment within the bounds set by the university. But what are those bounds? I'm typing this on a university-owned computer right now. If I switch over and start playing around at Pogo [pogo.com] (I have an unreasonable addiction to Word Whomp [pogo.com]), they can boot me out of this lab for using university-owned equipment to play games.

So, the question now becomes: now that universities can no longer allow this unofficial screwing, what policies will be put into place to make it official (and legal)?

I was developing a 5 MW laser and my professor stole it to put onto a B-1 bomber. I had the last laugh though! I filled a huge aluminum foil bag with popcorn kernels and hacked the targetting system of the laser so that when it the laser was fired, it hit the popcorn kernels and filled my professors whole house with popcorn!

This kind of thing happens all the time in university research labs, no matter what field it's in. Part of the problem is that in certain fields, such as CS or engineering, research can be translated directly into dollars, which raises the stakes for protecting one's own innovations. But university politics being what they are, it's often very difficult for a student to distance him/herself from the advising professor. Sure, a student may sue a professor for falsely taking credit for an invention, but what good is that going to be if the department then refuses to grant the student a Ph.D.? Is the invention worth more than the lambskin?

Another wrinkle to this argument is that it's often rather difficult to really know who invented what. Even if a student does come up with something that the professor hadn't thought of, what's the likelihood that the professor had nothing to do with it? In other words, what if an adviser's guidance contributed to 95% of the student's way of thinking? In that, it's like taxes: nobody wants to pay them, because they feel that they earned the money and deserve to keep it. But how many people could earn the money that they earn without the help of the social/governmental/business infrastructure in which they live and work?

It is an unfortunate reality that the goals and motivations of professors are not always aligned with their graduate students. A professor, even one that places their students interest as a priority, usually spends the majority of his time chasing funding. Most universities take ~50% of each grant to support facilities and non-research staff and there is a significant amount of pressure on the professor coming from his own department to acquire funding. This requires a large effort publishing, speaking, and writing grants. In a PR sense, the professor is selling himself and the granting institutions and the world at large view his laboratory and students as an extension of the professor. Optimally, the student graduates with a good education, solid research experience, and a few publications from a lab with an established track record. This is the best case scenario.

Unfortunately, dwindling grant sources have placed even more pressure on the acquisition of funding. The universities view patent royalties as a viable alternative to grants within technological fields and most have "technology transfer" groups specializing in harvesting intellectual property from labs and transforming it into funds. This system effectively funnels discovery from a large number of faculty, staff, and students into business group independent of the inventors. Students seldom gain any profit from these activities. Furthermore, not all professors give priority to their mentoring resposibility. On the contrary, many professors treat students as temporary low wage labor to be used to generate data (to publish, write grants, aquire funding, hire students...). Even students writing grants are seldom given intellectual credit within their field. Credit is reserved for the professor by default and even a conscientious professor usually has difficulty time distributing credit.

A graduate student's long years of toil used to be rewarded with an academic position. Professors and students justified the inbalaces of credit a temporary phase within an academic career. This has changed. Today, academic opportunities are far more limited and a student is fare less likely to remain within academia. As a result, the student has in fact become temporary low cost labor. More conflicts will occur as students recognize this.

I've always kind of felt this "what's the point" feeling at the prospect of doing research under a prof. I don't know what it's like at other schools, but at the school I went to, it's not like "I'm interested in X, and I'd like to do an independent study in it" -- it was like this: "You want to do an independent study? Well here are your choices: professor X is working on neural networks, professor Y is doing user interfaces" etc, etc. You're just helping them gain more prestige, etc., and in exchange you get your recommendation. I guess it works as a system for producing professors, but it is certainly a misrepresentation -- my idea of an "independent" study would be where you are given some freedom to explore what interests you and go where your mind leads you, whether it leads you further into academia, into the real world, or somewhere else. A system like that, I imagine, wouldn't just produce brilliant professors, but briliant graduates.

The court decision on this case came down last summer (June or July), and the article cited is dated Oct. 3 -- OLD!. Not only that, but this decision is only the beginning of this case. It just gave the plainiff the right to sue -- whether she wins the suit or not won't be decided for years. I asked Joany, my next door neighbor, if she was going to move out of our modest townhouse community now that the suit was decided in her favor. She told me it will be years, if ever, before she sees any of the $20 million (half of the $40 million the University got out of her work) she's entitled to.

It doesn't matter whose name is on the patent--the patent needs to be assigned to the school or the organization sponsoring the research anyway. Some schools have fairly liberal rewards for patents while others don't, but the actual rights in the patent will in any case not remain with the researcher. If the research was paid for by public funds, as most biomedical research is, the public should expect (though in these times doesn't always get) the rights to any invention--that is, it should be placed in the public domain.

the university system will have to invent an "Indentured Student" status.

Oops, student loans take care of that, never mind.

I'm glad someone put a blemish on the academic community for what amounts to "legalized theft", now if only someone could break the "At will Employee" crap the world would be a happier place, I think.

Supposedly slavery was abolished. Not really, it has just been wrapped up in legaleaze, sugar coated and put on a contract for education and corporation's use as a weapon against its own students/employees.

Yes, I admit we all have to prostitute outselves sooner or later, but at least give us the ability to change pimps!

Heh, pit one corp/campus against the other...beautiful.

This university/company will give me 50% *and* allow me to use their equipment for a dollar a year!

I've seen lots of discussion about what body deserves the credit, ownership, and rights to a patent. I am going to lay up a basic apples-to-apples comparison between University/Graduate research and Corporate research.

A company/corporation:

A corporation employs you and pays you a salary.

A corporation does not charge you tuition or fees for use of its facilities.

A corporation generally holds all rights to discoveries and inventions you make during your work with the company.

An University:

An University does not employ you or pay you a salary.

An University charges tuition, lab fees, and graduate fees to use its facilities and personnel.

An University generally holds all rights to discoveries or inventions you make during your research.

These two institutions are NOT balanced! I can completely understand and agree with a company which claims rights to a patentable invention you make during work hours and on work equipment. I can NOT understand how an University can even begin to claim rights, when the student is NOT employed by the university and PAYS to use their facilities! Any fruits of the student's labor are his- the University has already received their compensation - tuition!

I'm having a very difficult time understanding how an organization being fully compensated for use of their facilities can try to claim IP ownership on things created with their service. That's roughly equivalent to paying the Property Owner of an office building a commission, based off of your company's profits, above and beyond your rent!

Indeed, you make some excellent points, especially with the role of Universities in providing a service (and what exactly that service is).

Any student who has expressly entered into an agreement with the University which compensates them for their work (pays for tuition, housing, salary, whatever) would, in my mind, be an employee of the University and the rights to innovation would justly fall in the hands of the University. It's the student's decision to enter that sort of agreement with the University that is so important.

Lemon educations are a dime a dozen. Anyone can buy themselves a degree from the college of their choice with little effort and even less learning. The dot-com phase left the world with plenty of paper CIS-degree holders, MCSEs, and CCNAs (among others) who completely lack the education expected behind their degrees.

In the case of most University research, it is done by graduate students shooting for a Masters' or Doctorate degree. In this plateau of the educational system, the lemon educations are far less common. A student does receive an education from doing their research, but the research is not their payment for the education: their tuition is their payment.

Of course that cycles back to students explicitly choosing to enter a contract by which they trade their research rights for monetary compensation, be it tuition, free housing, or a salary. For those who accept no such compensation from the University, I am glad to see some protection of rights to research imposed by the government.

However, I am posting because of the tone of many posts on this topic that imply that advisors routinely assume unjustified credit for the work their supervised students do.

I strongly disagree with that, and my experience as both a grad student and a professor gives me quite alot of experience in this area. I am a computer scientist and do systems research, which strongly selects for group work, so that is a factor here, but it is also a major area of dispute with respect to credit in this thread of discussion.

First, the student is not working in a vacuum. The assumption that the student is solely repsonsible for whatever they do it almost always nonsense. They join a lab engaged in an area of research. Their (slavish) salary is paid for by $$$ raised by the professor. Trust me, I did *not* get my PhD for the pleasure of writing grant proposals. Raising money is a painful way to spend time, but one cannot pursue most research ideas without it, and most students (me included) would not *get* their PhDs without a research project to fund them.

So, at the first level, the student's ideas are born in the context of the research group, group meeting discussions, and usually regular meetings with the professor.

Beyond that, most often the research topic is formulated in cooperation with the advisor, if not actually suggested by the advisor. Then the research is conducted under regular review and guidance by the advisor. All of this is a *lot* of work, **for the advisor**,and often goes more slowly than the advisor could do it themselves, but that is the process of education.I am happy to do it, but claiming that I am not contributing to both the idea being developed and to the student's education is simply not true.

However, when the student has an impulse (as I did when a student) to exclaim "Hey! Why should you be an author on this paper, I did all the work!" there is a simple test.

Consider the work that was done, and the group of people that worked on it. Now consider that same work and group as you subtract each individual from the group in turn and ask:

1) Would the work have turned out substantially
the same without the absent person

2) Could the "subtracted" individual have done
the work on their own

Without exception for my projects in the last 8 years the answer to #1 vis a vis the student is YES, I could have done the work myself or supervising another student, and the project would have turned out essentially the same. The answer to #2 is NO, the student would not have had a snowball's chance in hell of having the idea or of implmenting it on their own.

At this point in the conversationt they usually blush to some degree and agree that my being a co-author on the paper describing "their" work is entirely appropriate. About half of them suggest I should be the first author, but I follow the custom of putting the student's names first.
There are studnets that come up with a brilliant idea and develop it on their own. Then a sole-author paper is appropriate. Most of the time, given the discussion above, I would say that sole authorship is not justified.

To close the loop on the original issue, sole authorship by the professor is not appropriate either, unless the student literally ran all experiments as specified byt he professor solely for a salary.

I hope this made sense and seems reasonable but if not I will don my asbestos suit.....

I hate to say this without reviewing more facts of the case, but... What was the lower court thinking? How do they find that since she had no ownership interest due to assignment that she is entitled to no relief?

The law is VERY clear on the matter, as the circuit court mentioned. Being listed as co-inventor is very much a right of an inventor, and they threw it out because the inventioned would have to be assigned to the university anyway? Excuse me?

I think that the defense should have had to prove that the lower court hadn't been bought.